Mayfield PenningtonDownload PDFPatent Trials and Appeals BoardApr 8, 202013242522 - (D) (P.T.A.B. Apr. 8, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/242,522 09/23/2011 MAYFIELD PENNINGTON PENNINGTON-001-US 5659 62008 7590 04/08/2020 MAIER & MAIER, PLLC 345 South Patrick Street ALEXANDRIA, VA 22314 EXAMINER FISCHER, RAE ART UNIT PAPER NUMBER 3784 NOTIFICATION DATE DELIVERY MODE 04/08/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docket@maierandmaier.com maierandmaier_PAIR@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MAYFIELD PENNINGTON Appeal 2018-003230 Application 13/242,522 Technology Center 3700 ____________ Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and NATHAN A. ENGELS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 4, and 6–20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “the assignees of record, Asger Christensen and Elizabeth Christensen.” Appeal Br. 2. Appeal 2018-003230 Application 13/242,522 2 CLAIMED SUBJECT MATTER The disclosed subject matter pertains to a “method and apparatus for facilitating physical training and conditioning.” Spec. ¶ 3 (“Summary”). Claims 1, 11, and 15 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A training device comprising: a rectangular cuboid frame having an interior opening and at least one support on a front side of the frame; at least one piece of conditioning equipment supported on the frame by the support; at least one second piece of conditioning equipment supported on a top portion of the frame, proximate the front side of the frame; at least one resistance harness directly connected to a rear side of the frame, wherein the at least one resistance harness has a portion thereof selectively attachable to a user to exert a resistance force on the user in the direction of the rear side of the frame when the user is moving toward the front side of the frame; at least one second resistance harness directly connected to the rear side of the frame and positioned below the at least one first resistance harness to exert a second resistance force on the user in the direction of the rear side of the frame when the user is moving toward the front side of the frame; and a cardiovascular exercise machine disposed within the interior opening of the frame, wherein the at least one piece of conditioning equipment is positioned so as to facilitate use of the at least one piece of conditioning equipment and the at least one second piece of conditioning equipment in immediate succession, while simultaneously using the cardiovascular exercise machine, the at least one resistance harness, and the at least one second resistance harness. Appeal 2018-003230 Application 13/242,522 3 EVIDENCE Name Reference Date Luck US 4,569,401 Feb. 11, 1986 Rempe US 6,554,747 B1 Apr. 29, 2003 Jutte US 2010/0227742 A1 Sept. 9, 2010 REJECTIONS Claims 1, 2, 4, 6, 7, 11, 12, and 15–18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Luck and Rempe. Claims 8–10, 13, 14, 19, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Luck, Rempe, and Jutte. ANALYSIS The rejection of claims 1, 2, 4, 6, 7, 11, 12, and 15–18 as unpatentable over Luck and Rempe Appellant argues claims 1, 2, 4, 6, 7, 11, 12, and 15–18 (i.e., all the claims under this rejection) together, and particularly independent claims 1, 11, and 15. Appeal Br. 5–9. We select claim 1 for review, with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 1 recites at least first and second conditioning equipment supported on a frame; at least first and second resistance harnesses attached to a user and connected to the frame; a cardiovascular exercise machine within the frame; and, the first and second conditioning equipment positioned so as to facilitate use thereof “in immediate succession, while simultaneously using the cardiovascular exercise machine.” The Examiner primarily relies on Luck as disclosing these limitations (with the understanding “that rearranging parts of an invention involves only routine Appeal 2018-003230 Application 13/242,522 4 skill in the art”), but the Examiner relies on Rempe for disclosing both a “cuboid frame” and resistance harnesses attached between a user and the frame. Non-Final Act. 4 (discussing what the Examiner considers to be an obvious rearrangement of parts to locate the second piece of conditioning equipment (large punching bag 5) proximate the front side of the frame (near punching ball station 3)). For clarity and understanding, we reproduce below both Appellant’s Figure 1 (left) and Luck’s Figure 1 (right). Appellant’s Figure 1 (left) depicts first and second conditioning equipment 110, 112 and cardiovascular machine 114. Luck’s Figure 1 (right) depicts first and second conditioning equipment 3, 5 and cardiovascular machine 2. The Examiner explains that it would have been obvious to “provide a resistance harness, as taught by Rempe, in order to stabil[ize] the user during exercise.” Non-Final Act. 4; see also Ans. 15 (explaining that “when riding [Luck’s stationary bicycle 2], the user moves about a great deal. The harness is present to keep the user stable . . . (as in the case of injured, elderly or physically challenged users)).” Appellant disagrees with the Examiner’s findings and conclusions for multiple reasons. First, Appellant contends, “Luck does not teach or suggest Appeal 2018-003230 Application 13/242,522 5 each and every limitation of the independent claims.” Appeal Br. 5. However, the Examiner’s rejection is not based on Luck alone, but instead is premised on claim 1 being obvious in view of the indicated combination of Luck and Rempe. See Non-Final Act. 3–6. The Examiner responds, “[o]ne cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.” Ans. 6–7 (citations omitted). Accordingly, Appellant’s focus on Luck alone is not persuasive of Examiner error because Appellant is not addressing the Examiner’s rejection. Appellant next contends, “Luck is not arranged to facilitate use of the second piece of conditioning equipment (punching bag 5) on the back section of the frame simultaneously with the cardiovascular exercise machine (stationary bicycle 2), which faces the front section of the frame.” Appeal Br. 6. The Examiner explains, “Luck recites the benefit of simultaneously working the arms and legs (Col. 1, Lines 25–26).” Ans. 8. Hence, the Examiner reasons “that it would be beneficial to use either piece of conditioning equipment, or both, while simultaneously riding the bicycle” and that “[s]uch an end result can be achieved by a simple rearrangement of parts” thereby positioning them “for optimal use” (e.g., closer together). Ans. 8. In other words, “[m]erely moving one piece of conditioning equipment in the structure cannot provide a patentable distinction.”2 Non- Final Act. 6. There is merit to the Examiner’s findings and reasoning. 2 “It would have been obvious to one of ordinary skill in the art to place both the first and the second conditioning device in a location such that it could also be used simultaneously while riding the bike to allow simultaneous exercise of the arms and legs, the very motivation taught by Luck.” Non- Final Act. 5; see also Luck 1:24–30. Appeal 2018-003230 Application 13/242,522 6 Accordingly, Appellant’s contentions are not persuasive of Examiner error, nor are they persuasive that the suggested rearrangement of parts would have been non-obvious to a skilled person. Appellant further contends that Luck’s arrangement fails to teach the limitation of the pair of conditioning equipment (i.e., Luck’s 3, 5) as being usable “in immediate succession while simultaneously using the cardiovascular exercise machine (stationary bicycle 2).” Appeal Br. 6. In other words, “transitioning from punching ball 3 to punching bag 5 would at least require dismounting of stationary bicycle 2, turning around and walking to the opposite section of the frame, and vice versa.” Appeal Br. 6. The Examiner disagrees stating, “it would be clear to even the most casual observer, that the first and second pieces of conditioning equipment of Luck [i.e., 3, 5] can be used one after the other, i.e., in immediate succession.” Ans. 8–9. The Examiner notes, “[n]either the claims, nor the written description, expound on the meaning of ‘immediate succession,’” and as such, the Examiner ascertains “that the limitation ‘in immediate succession’ means ‘one right after the other.’” Ans. 9. More importantly, rearranging punching ball station 3 and large punching bag 5 so that they are closer together, as proposed by the Examiner (see above) would further “minimize the time gap” between their successive uses and permit use of both pieces of conditioning equipment (punching ball station 3 and large punching bag 5) while simultaneously using the cardiovascular exercise machine (stationary bicycle). Ans. 9. There is merit to the Examiner’s findings and reasoning. Accordingly, Appellant’s contentions are not persuasive of Examiner error, nor are Appellant’s contentions persuasive that this “immediate succession” limitation is not obvious in view of Luck. Appeal 2018-003230 Application 13/242,522 7 Additionally, Appellant contends that Luck fails to teach that “the second piece is proximate the same side of the frame as the first piece of equipment.” Appeal Br. 7. This is because “Luck explicitly shows punching ball 3 on a front section and punching bag 5 on the back section.” Appeal Br. 7. The Examiner, on the other hand, explains, “the generally accepted meaning of the word ‘proximate’ is ‘near’ or ‘close,’” i.e., a “relative term.”3 Ans. 10 (citation omitted). Luck’s bags 3 and 5 are suspended from the same top frame member “just a bicycle-length distance” away when not rearranged as discussed above. Ans. 10; see also Luck Fig. 1. Because “proximate” is relative, Appellant does not explain how, after bags 3 and 5 are rearranged (see Ans. 11; Non-Final Act. 4), such rearrangement would fail to bring them “proximate [to] the same side of the frame” (i.e., the “front side”) as argued. Appeal Br. 7. Appellant further contends that “modifying the position of punching bag 5 would render the entire structure of Luck unstable, and therefore unsatisfactory for its intended purpose.” Appeal Br. 7. This is because bag 5 “is ‘strategically positioned’ on the back section ‘to provide stability for the entire structure.’” Appeal Br. 7 (referencing Luck 2:27–29). The Examiner points out, however, that Luck also discloses barbell 28 mounted on this back section (see Luck 2:27–29), and there is no indication that removal of the barbell therefrom would render Luck unstable. “It is reasonable to assume that the punching bag could similarly be moved without catastrophe.” Ans. 13. Appellant “provides no support for this 3 This term is not employed or defined in Appellant’s Specification; Appellant does not proffer a different definition thereof; and, Appellant does not dispute the Examiner’s definition of this term. Appeal 2018-003230 Application 13/242,522 8 conclusion” (Ans. 11) and we are instructed that “[a]ttorney’s arguments in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). There is merit to the Examiner’s findings and reasoning, and, further, Appellant’s contentions are not persuasive of Examiner error. Nor are Appellant’s contentions persuasive that “modifying the position of punching bag 5 would render the entire structure of Luck unstable, and therefore unsatisfactory for its intended purpose.” Appeal Br. 7. Moreover, to the extent that any additional redesign or counterbalancing might be required to permit the rearrangement of parts (movement of bag 5 to the front side of the frame), Appellant does not present persuasive evidence or technical reasoning to show that such modifications would have been beyond the technical grasp of a person having ordinary skill in the art. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421(2007). Thereafter, Appellant addresses Rempe contending, “Rempe does not cure the deficiencies of Luck.” Appeal Br. 7. More specifically, Appellant argues that Rempe “merely discloses an exercise device and method of use including” housing and harness assemblies and biasing members, but Rempe does not teach or suggest positioning at least one piece of conditioning equipment so as to facilitate use of two pieces of conditioning equipment “in immediate succession, while simultaneously using the cardiovascular exercise machine.’” However, Rempe was not relied on to teach such features, but instead to disclose the use of a cuboid frame and resistance harnesses connecting the user directly to the frame. See Non-Final Act. 4; see also Ans. 14. Appellant’s contentions on this point are not persuasive of Examiner error. Appeal 2018-003230 Application 13/242,522 9 Appellant additionally contends, “there is no sufficient evidence of record for the required motivation to modify the Luck device by incorporating Rempe’s harnesses.” Appeal Br. 8. Appellant understands the Examiner’s stated motivation is based on “stability” (Non-Final Act. 4), but Appellant contends that the cardiovascular bicycle employed “in Luck is by definition ‘stationary,’ the user is not moving” and hence “there would be no motion for any harness to resist, rendering any such device superfluous.” Appeal Br. 8; see also Luck 1:57–58. Indeed, Luck teaches “stationary bicycle 2.” Luck 1:57–58. However, as stated above, “[t]he harness is present to keep the user stable.” Ans. 15. Appellant does not dispute the Examiner’s findings that “when riding, the user moves about a great deal.” Ans. 15. “Importantly, the device of Luck is a stationary bike that the user rides while striking a punching bag. The punching action has a high potential to set the user off balance on a bicycle.” Ans. 15–16. This would particularly be likely “in the case of injured, elderly or physically challenged users.” Ans. 15. Appellant does not dispute these findings, and as such, Appellant’s contention above regarding a lack of motivation is not persuasive of Examiner error. Accordingly, and based on the record presented, we are not persuaded the Examiner erred in rejecting claims 1, 2, 4, 6, 7, 11, 12, and 15–18 as unpatentable over Luck and Rempe. We sustain their rejection. The rejection of claims 8–10, 13, 14, 19, and 20 as unpatentable over Luck, Rempe, and Jutte Appellant argues all these claims together. See Appeal Br. 9–10. We select claim 9 for review, with the remaining claims standing or falling therewith. Appeal 2018-003230 Application 13/242,522 10 The Examiner relies on Jutte for disclosing “a pull-up bar coupled to the frame (150; Paragraph 27) and a dip bar coupled to the frame (100; Paragraph 27).” Non-Final Act. 7. Appellant does not dispute these teachings, but instead contends, “Jutte does not cure the deficiencies of Luck and Rempe.” Appeal Br. 10. However, we are not persuaded there are deficiencies in the combination of Luck and Rempe that are in need of curing. Accordingly, and based on the record presented, we are not persuaded of Examiner error. We sustain the Examiner’s rejection of claims 8–10, 13, 14, 19, and 20 as unpatentable over Luck, Rempe, and Jutte. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 6, 7, 11, 12, 15–18 103(a) Luck, Rempe 1, 2, 4, 6, 7, 11, 12, 15– 18 8–10, 13, 14, 19, 20 103(a) Luck, Rempe, Jutte 8–10, 13, 14, 19, 20 Overall Outcome 1, 2, 4, 6–20 No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation